On Sept. 1, 2015, the United
States Patent and Trademark Office (USPTO) rolled out a new pilot program that
may help trademark registrants breathe new life into older registrations.
Normally, once a trademark has
been registered for particular goods/services, it is not possible to later
amend those goods/services beyond the scope of the current identification. But technology evolves, and goods or services
may be phased out in favor of modern counterparts. In the past, a registrant for a mark applied
to outdated goods/services had to file a new application, thus giving up an earlier
date of use.
Under the new pilot program, a
registrant may petition the Director of the USPTO to amend the respective
goods/services beyond the scope of the current identification. But, the petitioner must show that it no
longer uses the respective mark with any of the original goods/services and
that the newly recited goods/services are the result of newly evolved
technology in the manner or medium by which products and services are offered
for sale or provided to customers. The
registrant must delete the old, original goods/services in favor of the newly
evolved goods/services.
This pilot program is not
available to those whose applications are still pending. Also, it is not available to those who
continue to use the subject mark with some or all of the original
goods/services; registrants who use the mark on “old” and “new” goods/services
must file a new application for the “new” goods/services.
The petition itself has certain
specific filing requirements, including a request for amendment, fees,
specimens, and dates of first use of the mark with respect to the amended
goods/services. The petition must be
filed through the Trademark Electronic Application System (TEAS). The procedural details can be found on the
USPTO web site, and registrants unfamiliar with practice before the USPTO are
recommended to rely on the services of an experienced trademark attorney.
In announcing this pilot program,
the USPTO has suggested it is proceeding with caution to avoid causing harm to
other users of a relevant mark. Before
an amendment under the program is approved, an examining attorney must perform
a new search for conflicting uses. Petitioners
must agree to not file an affidavit or declaration of incontestability under
§15 of the Trademark Act as to the amended goods/services for a period of five
years from the amendment. Also, once an
amendment has been approved, it will be published by the USPTO and third
parties who believe they may be harmed by the amendment will have a thirty day
period in which to comment.
The USPTO has provided on its web
site a number of example amendments that would be acceptable under this pilot
program, as well as some that would not be allowed. Key points to keep in mind are that the
original goods/services are no longer in use due to the evolution of technology
and that the new goods/services must pertain to the same subject matter as the
original.
As an interesting example, the
USPTO points out that “streaming of audio material in the nature of music” in
International Class 38 would not be an acceptable replacement for “phonograph
records featuring music” in International Class 9. The proposed use is to identify a
telecommunications-provider service as opposed to identifying the source of
content. “Providing on-line music, not
downloadable” in International Class 41 would be an acceptable amendment in
this case.
In an era of rapid technological evolution, the USPTO’s pilot program offers trademark registrants a useful tool for preserving valuable rights.
